from the rear-ended-by-the-law dept

Remember South Butt? They're the relatively small and vulgarly-named clothing manufacturer North Face took to court over trademark infringement. Soon after, South Butt decided to use the lawsuit as a marketing ploy and then responded in court with a hysterical legal filing. We said at the time that moving forward with a lawsuit was a poor choice by North Face, serving only to fuel publicity for what it misguidedly saw as a competitor.

Proving that learning a lesson is very, very difficult, North Face has taken the former owners of South Butt to court again. What happened at the conclusion of the original lawsuit was South Butt agreed to drop their brand entirely as part of an injunction. Then, according to North Face, they jumped right back into their old shenannigan ways, forming the company Why Climb Mountains LLC and registering for a trademark on their new brand Butt Face. As if all of this wasn't funny enough, the following is taken from North Face's filing, in which they are asking for WCM LLC to be held in contempt, to recover costs, and for disgorgement for trademark violations:

"A survey conducted by plaintiff shows that approximately 35 percent of respondents identify The North Face as being associated with The Butt Face trademark when shown a sample of contempt respondents' T-shirts. Not only are contempt respondents now engaged in the widespread sale and promotion of The Butt Face branded goods, but Why Climb Mountains, LLC also has filed for registration of The Butt Face trademark with the United States Patent and Trademark Office."

If this is alledging brand confusion, I'm at a loss as to exactly how North Face went out and managed to collect what has to be the world's most hurried morons in a single room as a method for getting 35% of them to think Butt Face and North Face were the same thing. WCM's lawyer seems to feel similarly skeptical:

""The South Butt and Olop [South Butt's sister line] are genuinely committed to the fundamental concept that the consuming public is perfectly capable of discerning the difference between a direction point on a compass and that part of the body from which solid waste is evacuated," [Albert] Watkins said in a statement."

The other interesting tidbit in North Face's complaints is that they believe...wait for it...that WCM's owners are simply using the lawsuits filed against it as publicity. They reached the same conclusion as we had years ago. But, in an apparent attempt to test a theory called "litigation through stubborness", they filed suit and gave their adversaries more ammuntion for publicity. It would be as though I had an ant problem in my kitchen because I left some honey out on the counter and my response was to cover the counter in honey while complaining about the ants marching in.

In the end, North Face likely would have been far better served to ignore South Butt along with its new iteration, Butt Face. On the other hand, if they had, I never would have had the pleasure of writing the headline for this article. So, you know, thanks for that I guess.

from the not-a-judge-of-humor,-apparently dept

When we recently wrote about South Butt's response to the lawsuit from The North Face, I wondered how the judge would take it. While that post got a ton of traffic, and we heard from lots of people -- including many lawyers -- claiming that it was one of the "best" legal filings they had ever seen, you could see how a judge might be offended and think that it somehow mocked the judicial process. Indeed, while the judge doesn't appear pissed off about it, he also was not that pleased. Eric Goldman points us to the judge's refusal to dismiss the complaint, which also warns the lawyer to knock off the frivolity:

I remind counsel of their obligations under Rule 11 and that, with each
filing, they certify to the Court that the motion is not being presented to harass,
cause unnecessary delay or needlessly increase the cost of litigation and that the
legal contentions are warranted by existing law or nonfrivolous arguments for
extending, modifying, or reversing existing law or for establishing new law.
Although this filing may not reach the level of frivolity, it approaches the line.

Too bad. The judicial system would be a lot more interesting if lawyers felt free to respond as The South Butt's lawyer did originally.

from the face-and-a-butt dept

You gotta love snarky legal filings. We've already covered the ongoing saga between the clothing company behind The North Face and a teenager who started a parody line of clothing called The South Butt (short version, TNF got mad and despite lots of public outcry in favor of TSB, TNF's parent company sued). You already knew that the folks behind The South Butt wouldn't necessarily respond in a conventional manner. They had already set up a Facebook app to see if people could tell the difference between a face and a butt.

The response is definitely snarky in tone. It talks up the "cherubic" teenager "Jimmy" behind the site (and includes a photo of him for good measure) who it compares to Mad Magazine's Alfred E. Newman mixed with "Skippy the Punk" and notes that despite being 19-years-old, he "looks 14" and "acts 12." It mocks the claim of "piracy" wondering what parody clothing has to do with "high crime on the high seas, perhaps the South Seas, as contrasted with its oft explored polar opposite." It goes on to deny or affirm the various claims made against The South Butt, and does so mockingly at times. But my favorite may be:

The "half ass" design portion of The South Butt logo is comprised of two stripes curved in a butt-like fashion upward from the left side of the "The South Butt" text, while the "half dome" design mark of the North Face is comprised of three thinner lines curved downward from the right side of the text "The North Face."

I'm not sure how the judge will take the filing, but it's definitely amusing. Either way, it still amazes me that The North Face thought that filing this lawsuit made any sense at all. Someone got bad advice.

from the yeah,-that'll-go-over-well dept

Earlier this year, we wrote about how outdoor clothing firm North Face was seriously overreacting in threatening a small parody clothing manufacturer run by an 18-year-old student creating clothing under the "South Butt" brand name. At the time, we were amused by the boy's lawyer noting:

"I did try to explain with a great deal of candor to counsel for the North Face that the general public is aware of the difference between a face and a butt."

Well, now he may get the chance to explain that in court as well. Despite all of the publicity around those original threats, which resulted in many people trashing North Face for threatening this parody operation, North Face has apparently decided to still move forward with a lawsuit against the kid (thanks Jackie). Apparently, North Face has no sense of humor whatsoever. It's really amazing that no one at North Face paid much attention to what was being said online about the company even in bringing the threat of a lawsuit. Now that it's actually filed, the backlash may be an even bigger deal. While it is true that companies need to police misuses of their trademark, this was an opportunity for North Face to act cool about it (and, hell, why not just grant the kid a license). It would have made them look cool. Instead, they look like big corporate bullies, beating up on a kid who was having fun selling a parody line of clothing.